Yesterday marked the sunrise launch of the .porn and .adult generic top-level domains (gTLDs), which join .xxx in the top-level domain name space as gTLDs targeted mainly at online purveyors of adult entertainment. As with .xxx, the introduction of these adult-themed gTLDs presents yet another annoyance for trademark owners already fatigued by the weekly onslaught of gTLDs introduced over the past couple of years pursuant to ICANN’s expansion of the domain name space. Also as with .xxx, brand owners have some opportunities to defensively register .adult... More]]>

Yesterday marked the sunrise launch of the .porn and .adult generic top-level domains (gTLDs), which join .xxx in the top-level domain name space as gTLDs targeted mainly at online purveyors of adult entertainment. As with .xxx, the introduction of these adult-themed gTLDs presents yet another annoyance for trademark owners already fatigued by the weekly onslaught of gTLDs introduced over the past couple of years pursuant to ICANN’s expansion of the domain name space. Also as with .xxx, brand owners have some opportunities to defensively register .adult and .porn domain names early in the life of these new gTLDs.

ICM Registry, the operator of this titillating trifecta of gTLDs, intended that trademark owners who secured “blocking” registrations of .xxx domains would receive free matching registrations for corresponding domains in the .porn and .adult. (and the forthcoming .sex) gTLDs. However, this plan fell through, and brand owners must once again pony up registration fees. They generally have three options prior to general availability of .porn and .adult domains.

Trademark Clearinghouse Sunrise Period. From March 2, 2015 to April 1, 2015, trademark owners that have trademarks recorded in the Trademark Clearinghouse can register corresponding .porn and .adult domains in the same manner that they can register in the sunrise periods of other newly launched top-level domains.

Sunrise B. From April 6, 2015 to April 30, 2015, trademark owners that already own a matching .xxx registration can register .porn and .adult domains.

Domain Matching. From May 6, 2015 to May 31, 2015, anyone that owns a .xxx domain registered by April 30, 2015 can register matching .porn and .adult domains.

General availability of .porn and .adult domains opens on June 4, 2015, when domains can be registered by anyone on a first-come, first-served basis. Certainly, trademark owners — and especially the owners of famous brands — concerned about potentially harmful third-party .porn and .adult registrations should consider registering their brand.porn and brand.adult domains during one of the two sunrise phases, if they’re eligible, and if not then at some point thereafter.

While .porn and .adult are less in-your-face than .xxx, they are arguably more likely to give brand owners headaches. Unlike .xxx, registration in the these new gTLDs isn’t limited to purveyors of adult entertainment — they are available to all. Further, both .porn and .adult have meanings beyond sex. “Porn” is often used colloquially to refer to enticing and “explicit” visual presentation of things other than naked humans, such as food and cars, and “adult” has widespread applicability beyond pornography. For all of these reasons, there’s a good chance these domains could be more popular than .xxx, and they are probably more likely to be abused or at least registered and used in a manner that may conflict with trademarks.

The .Sex gTLD is expected to launch this fall, and the same registration options for brand owners should be available at that time.

]]>http://www.trademarkandcopyrightlawblog.com/2015/03/porn-and-adult-join-xxx-to-form-unsexy-threesome-for-brand-owners/feed/0Don’t Mess with Texas Trademarkshttp://www.trademarkandcopyrightlawblog.com/2015/03/dont-mess-with-texas-trademarks/
http://www.trademarkandcopyrightlawblog.com/2015/03/dont-mess-with-texas-trademarks/#commentsMon, 02 Mar 2015 13:30:45 +0000http://www.trademarkandcopyrightlawblog.com/?p=2854As a native Texan, I always feel a bit nostalgic and homesick around early March. Not only is bluebonnet season (read: spring) around the corner (if only that were true here in Boston!), but March 2 marks Texas Independence Day – the date on which, in 1836, Texas declared its independence from Mexico. Although the Republic of Texas lasted only ten years, its fiercely independent spirit seems to live on in the tenacity with which the Lone Star State asserts trademark rights in Texas’s unique brand. In... More]]>As a native Texan, I always feel a bit nostalgic and homesick around early March. Not only is bluebonnet season (read: spring) around the corner (if only that were true here in Boston!), but March 2 marks Texas Independence Day – the date on which, in 1836, Texas declared its independence from Mexico. Although the Republic of Texas lasted only ten years, its fiercely independent spirit seems to live on in the tenacity with which the Lone Star State asserts trademark rights in Texas’s unique brand. In honor of Texas Independence Day, we have rounded up a few recent tales of trademark showdowns involving the state’s iconic images and slogans.

Remember the Alamo!

Just four days after the signing of the Texas Declaration of Independence, on March 6, the Texian defenders of the Alamo fell to the forces of Mexican General Santa Anna. Several weeks later, the battle cry of “Remember the Alamo!” helped spur Sam Houston’s troops to ultimate victory over Santa Anna in the Battle of San Jacinto on April 21. The mystique of the Alamo is not lost on the scores of businesses that have adopted it as a trademark (e.g., Alamo Rental Car). As we reported in December, a fight is currently brewing between two beer companies both seeking to capitalize on the Alamo’s image, and the State of Texas has inserted itself into the breweries’ dispute.

San Antonio-based Alamo Beer Company has been selling beer under the ALAMO mark since 1997. In conjunction with its word mark, Alamo Beer has always used a logo and trade dress based on the distinctive roof outline of the Alamo mission building. In 2011, Old 300 Brewing, d/b/a Texian Brewing Co., launched its TEXIAN beer brand, and in 2012 it began using a logo that likewise incorporated the Alamo roofline. After cease and desist correspondence from Alamo Beer, Texian removed the image from its beer packaging but continued to use it on advertising and bar tap heads.

In March 2014, Alamo Beer sued Texian for infringement of its logo and trade dress. The suit apparently caught the attention of the State of Texas, which (through its General Land Office) owns the physical building of the Alamo, a popular tourist attraction in San Antonio. The state moved to intervene in Alamo Beer’s lawsuit, claiming that it owned the image of the building and the right to commercialize it to whatever extent it chose. Texas does, in fact, commercialize the image of the Alamo, primarily on what plaintiff Alamo Brewing refers to as “souvenirs and trinkets” sold in the Alamo gift shop. The state owns a number of federal registrations for the word mark THE ALAMO and for a design mark featuring the wording “The ALAMO” under an outline of the Alamo roofline. The registrations cover a variety of goods and services, including clothing, blankets, tote bags, jewelry, and documentaries on DVD. Just before filing its motion to intervene, Texas filed new applications to register its ALAMO marks in connection with bottled water and a variety of foods, such as barbecue sauce, candy, and soup mix – goods that the state apparently believes are more closely related to beer.

Alamo Beer was not pleased about Texas’s attempt to intervene in its infringement suit, and to assert an interest in the use of the Alamo name and image in connection with beer. Alamo Beer opposed the state’s motion, arguing that the state’s use and registrations in connection with souvenirs did not give it rights in the market for beer, and that the fame of the Alamo building itself did not constitute fame as a trademark sufficient to give rise to a right to prevent dilution. Alamo Beer also pointed out that ownership of a building does not necessarily imply trademark rights in images of the building, citing a 1998 Sixth Circuit case involving Cleveland’s Rock and Roll Hall of Fame. Finally, Alamo Beer noted that it had been using its marks predominantly in San Antonio for seventeen years, hinting at a possible laches defense to an attempt by the State to put an end to its use.

Texas, however, argues that its extensive use of the ALAMO word and design marks on diverse products has created significant goodwill, and that the public would expect that products bearing ALAMO marks are produced or authorized by the state of Texas. The Court ultimately granted the state’s motion to intervene, and it appears that the case is headed toward mediation.

Don’t Mess with Texas!

The phrase “Don’t mess with Texas” has become so well known as a slogan of state pride that it may surprise some to learn that it originated in the 1980s as a campaign of the Texas Department of Transportation (“TxDOT”) to keep litter off of the Texas highways. Capitalizing on the runaway popularity of the slogan, TxDOT has put the words on an array of merchandise and owns federal trademark registrations for the phrase in connection with bumper stickers, clothing, magnets, key chains, mugs, and the like.

TxDOT is also diligent about enforcing its rights in the slogan against would-be infringers and parodists. In 2011, Texas sued author Christie Craig, her publishers, and Barnes & Noble over their impending publication of a romance novel under the title Don’t Mess with Texas. The court denied TxDOT’s motion for a temporary restraining order to prevent publication, but the parties ultimately settled the case, and subsequent printings of the book were released under the title Only in Texas.

More recently, TxDOT opposed a federal application filed by Ohio Mobile Billboard, LLC to register DON’T MESS YOUR PANTS IN TEXAS in connection with bumper stickers, t-shirts, sweatshirts, and hats. TxDOT alleged both likelihood of confusion and dilution by tarnishment, and pointed out that, in addition to infringing its federally registered marks, the Applicant was attempting to appropriate the state’s common law rights by imitating its trade dress. Although the Applicant filed an answer to the opposition in November 2014, and the proceeding is still pending, it appears that the DON’T MESS YOUR PANTS webpage and Facebook page are no longer accessible. It seems that TxDOT is doing an effective job of keeping not only the state’s highways but also its image, and the trademark registry, clean.

As Texans celebrate their (former) independence this week – and Alamo Beer, for one, encourages celebration with its “Siege Week” events – perhaps they can take pride in knowing that their state is still fighting to protect its unique identity, at least on the branding battlefield.

By now you’ve probably heard of Snapchat. But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a Snapchat user. Snapchat is, as they said once upon a time, all the rage with the kids. It’s a social messaging mobile app that allows users to send photos and videos — “Snaps” — to groups of friends, which can be viewed on... More]]>

By now you’ve probably heard of Snapchat. But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a Snapchat user. Snapchat is, as they said once upon a time, all the rage with the kids. It’s a social messaging mobile app that allows users to send photos and videos — “Snaps” — to groups of friends, which can be viewed on the recipient’s mobile device only for a very limited time. It’s a mashup of text messaging, Internet chat, and video streaming that seems tailor-made for the Generation Z crowd.

The Snapchat Hack

These days, being the new cool social app in the room is like painting a target on your back. In December 2013, after the revelation of a security vulnerability and subsequent “mitigation” of the vulnerability implemented by Snapchat, Snapchat was hacked to the tune of 4.6 million stolen usernames and phone numbers. The purpose of the hack, ostensibly, was to “raise public awareness” and to “put public pressure on Snapchat” to fix the vulnerability.

Registration of Snapchatcheck.com

A few days after the hack, in January 2014, someone — widely believed to be Bourne Technologies, but officially a registrant hidden behind a privacy service and identified only as “Private Registrant / A Happy Dreamhost Customer”– registered the domain name snapchatcheck.com, and launched a website at www.snapchatcheck.com, where Snapchat users could check to see whether their personal data had been leaked in the Snapchat security breach. Other than a short description of its purpose and a search box, the simple, single-page site (which remains active as of the date of this post) contained little else except for a small Snapchat logo and copyright notice featuring a link to Bourne Technologies’ website.

A UDRP dispute is an arbitration proceeding before an independent Panel — in this case, a single-panelist Panel — and typically administered either by the World Intellectual Property Organization (WIPO) or the NAF. Registrants of nearly all top-level domains (.com, .org, and so forth) agree to be bound by the UDRP or similar dispute resolution procedures in their domain name registration agreements, which are intended to be low-cost processes for addressing cybersquatting and other bad-faith domain name registration and use. A successful UDRP complainant is awarded the subject domain name (cancellation of the domain name is available in the alternative, but this rarely requested — it’s generally to the complainant’s benefit to control the domain name post-dispute).

To prevail in a UDRP proceeding, the complainant must satisfy three “prongs,” which Snapchat argued as follows:

The snapchatcheck.com domain is identical or confusingly to Snapchat’s SNAPCHAT trademark;

The registrant does not have any rights or legitimate interests in the snapchatcheck.com domain name; and

The registrant has registered and use the snapchatcheck.com domain name in bad faith.

To support the second prong, Snapchat argued that the registrant was not providing any bona fide services under the subject domain, and that the use of the well-known SNAPCHAT mark and logo constituted an attempt to deceive users into believing that the website was provided by or otherwise affiliated with Snapchat, which use was not a legitimate use of the domain name. Further, Snapchat argued that this unauthorized trademark use, along with the link to Bourne Technologies’ website (which revealed the motive to be commercial in nature), demonstrated that the domain was registered and then used in bad faith.

The registrant, perhaps confident in its legal position, didn’t bother to respond. While a good-faith registrant typically benefits from setting forth a defense, all UDRP complaints are evaluated on their merits, and automatic default judgment is generally unavailable.

The Panel’s Decision

The NAF Panel issued its decision in January 2015. Even absent a response by the registrant, the sole Panelist was unconvinced by Snapchat’s arguments. While the first prong was easily satisfied, the Panel conducted its own research outside of the written record, learned of the Snapchat hack, and determined that the registrant was making “a legitimate noncommercial or fair use of the domain name (without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue),” and that the registrant had “established…legitimate rights in the domain name.”

As for the third prong, the determination that the registrant had rights or legitimate interests in the domain invoked a presumption that the domain was not registered or use in bad faith. Without addressing Snapchat’s specific arguments, the Panel determined that the circumstances as a whole simply didn’t support the conclusion that the snapchatcheck.com domain was registered and used in bad faith. As the three elements of the UDRP were not satisfied, relief was denied.

What Comes Next?

The UDRP does not provide for an administrative appeal process. Thus, if Snapchat wishes to pursue the matter further, it will probably commence a civil action under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), which would probably include various other trademark claims under the Lanham Act. To our knowledge, no such dispute has been instituted — yet. Snapchat could also offer to purchase the domain from the registrant (if it hasn’t already). In any event, if you’re a Snapchat user still concerned about your personal info in the wake of the Snapchat hack, the www.snapchatcheck.com remains available!

]]>http://www.trademarkandcopyrightlawblog.com/2015/02/udrp-panel-tells-snapchat-to-check-itself-regarding-snapchatcheck-com/feed/0And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigationhttp://www.trademarkandcopyrightlawblog.com/2015/02/and-the-lawsuit-goes-to-an-oscar-time-guide-to-best-picture-intellectual-property-litigation/
http://www.trademarkandcopyrightlawblog.com/2015/02/and-the-lawsuit-goes-to-an-oscar-time-guide-to-best-picture-intellectual-property-litigation/#commentsTue, 17 Feb 2015 13:30:50 +0000http://www.trademarkandcopyrightlawblog.com/?p=2850The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are just as worthy of attention as the films... More]]>The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are just as worthy of attention as the films themselves but, until they start giving Most Litigated Picture award (which would almost certainly go either to Gone with the Wind or Titanic), you’ll have to make do with our comprehensive guide to intellectual property disputes (well, the published opinions, at least) involving past Best Picture Oscar winners. Enjoy!

Cimarron (1931)

The plaintiff in Caruthers v. RKO Radio Pictures, Inc., 20 F.Supp. 906 (S.D.N.Y. 1937) alleged that the film Cimarron, which was based on the Edna Ferber novel of the same name, was copied from his unpublished manuscript, The Sooners. The Court found that, other than the setting (the settlement of Oklahoma) and well-known frontier scenes a faire, there were no similarities between the works, with one exception: a character who, while fanning flies away from a dinner table, becomes distracted and either falls into a cake (Cimarron) or strikes one of the diners with the fan (The Sooners). The Court held that this fleeting incident had no functional relationship to the story, and could not serve as the basis for a copyright infringement action.

The Great Ziegfeld (1936)

The estate of Florenz Ziegfeld brought a trademark suit to enjoin screenings of The Great Ziegfeld, a biopic of the late Broadway impresario. The estate alleged that the use of the “Ziegfeld” name by the film misappropriated the good will that the estate had inherited from Ziegfeld, and amounted to unfair competition under New York law. But the court in Coffey v. MGM Corp., 160 Misc. 186 (N.Y. Misc. 1936) disagreed. Since the “Ziegfeld” business no longer existed to make use of the goodwill (the show did not go on after his death), and goodwill of a strictly personal nature could not be conveyed posthumously, the Court refused to enjoin the screenings.

MGM wasn’t the only one that couldn’t get enough of the film and its success. In 1979, an Atlanta theatre announced the opening of Scarlett Fever, an unauthorized musical play based on the film. MGM filed a copyright infringement action to enjoin the production. In MGM v. Showcase Atlanta Coop. Prods., Inc., 479 F.Supp. 351 (N.D. Ga. 1979), the Court found that the works were substantially similar in terms characters, setting, plot and in many cases had identical dialogue. The Court rejected the defendant’s argument that Scarlett Fever was a protected parody of Gone with the Wind. The Court held that, although the play was presented in a humorous “cabaret” style and contained a few instances of arguable parody, it was predominately not a critical commentary but a derivative homage to the original. In other words, the play simply copied way too much from the film. The Court enjoined the production and later granted summary judgment for the plaintiffs.

The Wind Done Gone, on the other hand, was a parody. Alice Randall’s book retold the story of Gone with the Wind from the perspective of one of Scarlett O’Hara’s slaves, and intentionally borrowed characters and plot elements from the original in order to critique its romantic depiction of the Civil War-era American South. Mitchell’s estate brought suit and the District Court granted a preliminary junction against distribution of Randall’s book but, in SunTrust Bank v. Houghton Mifflin Co., 268 F. 3d 1257 (11th Cir. 2001), the Eleventh Circuit vacated the injunction as an unlawful prior restraint of speech and held that The Wind Done Gone was fair use.

Gone with the Wind merchandise has also been the subject of numerous trademark and copyright disputes, as we have previously reported here.

Casablanca (1943)

In 1941, Murray Burnett and Joan Allison wrote a play called Everybody Comes to Rick’s, the rights in which they assigned to Warner Brothers before the play was ever staged. The studio turned the play into Casablanca, one of the most iconic films of all time. In 1983, Warner Brothers produced a television “prequel” to the film, causing the playwrights to seek a declaratory judgment that the original transfer did not extend to the new derivative work. In Burnett v. Warner Bros. Pictures, Inc., 67 N.Y.2d 912 (N.Y. 1986), the Court of Appeals of New York affirmed dismissal of the claim on the grounds that the playwrights had failed to retain any rights, including with respect to derivative works.

From Here to Eternity (1953)

From Here to Eternity was based on a novel by James Jones, who served in the 27th Infantry Regiment, which was stationed in Hawaii just before the Pearl Harbor attack. Serving alongside Jones was Joseph Maggio. After the release of the film, Maggio took exception to the character of “Angelo Maggio,” and filed suit against the book’s publishers and the film’s distributors, claiming misappropriation of his name. The Court in People ex. rel. Maggio v. Charles Scribner’s Sons, 205 Misc. 818 (N.Y. Magis. Ct. 1954) dismissed the case, holding that the Angelo Maggio character, other than sharing a common last name, bore no similarities to the real-life Joseph Maggio, who had made no clear showing that the fictional character would be identified as him.

When film producer Kurt Unger learned of a non-fiction book about Allied prisoners of war who were forced to build a Japanese railway in Burma during World War II, he thought the story would make an excellent film, similar to the recently successful The Bridge on the River Kwai. Unger prepared a screenplay entitled Return from the River Kwai. When the studio that owned the rights to the original film learned of the project, it filed suit for trademark infringement, alleging that the title of the original film (even though based on a geographical location) had acquired secondary meaning. In Tri-Star Pictures, Inc. v. Unger,14 F.Supp.2d 339 (S.D.N.Y. 1998), the Court agreed, and found that Unger had “no legitimate reason” to use the title Return from the River Kwai other than to confuse consumers into believing, incorrectly, that it was an authorized sequel. Unger was permanently enjoined from using the title. Nevertheless, perhaps as the result of a subsequent settlement, Return from the River Kwai was finally produced in 1989. No Alec Guinness in this one, sadly, but the cast did include George Takei (Oh Myyy!).

The French Connection (1971)

Robin Moore’s non-fiction book, The French Connection, documents law enforcement efforts to bring down a drug trafficking ring. Francis Waters, a former federal narcotics agent, appeared in a photograph in the book, accurately identified. The book was adapted into the fiction film The French Connection. Waters claimed that his role was fictionally represented in the film by a character called “agent Mulderig,” and that this fictional representation constituted a misappropriation of his name and likeness (even though his name and likeness were not actually used). In Waters v. Moore, 70 Misc. 2d 372 (N.Y. Sup. Ct. 1972), the Court dismissed the claim, holding that New York right of publicity law did not give a person a cause of action merely because events similar to those he experienced in real life are depicted in fiction.

The Godfather (1972) and The Godfather Part II (1974)

When the estate of Mario Puzo announced its intention to release a novel called The Family Corleone, a sequel to The Godfather, the producers of The Godfather films sought a declaratory judgment that their 1969 contract to purchase the franchise rights from Puzo barred his estate from producing such derivative works. The estate filed breach of contract counterclaims, and argued that certain language which had been stricken from the contract (specifically the language granting the producers the right “to publish said work and/or adaptions thereof”) was proof that Puzo had retained the right to publish a sequel. In Paramount Pictures Corp. v. Puzo, 2012 U.S. Dist. LEXIS 139827 (S.D.N.Y. 2012), the Court held that the estate’s counterclaims were not preempted by the Copyright Act. The case settled shortly thereafter, and the book went on sale.

The Sting (1973)

In 1940, David Maurer wrote The Big Con, which documented the real-life activities of grifters in the 1930’s. Upon the release of The Sting by Universal Studios, Maurer and a production company to which he had licensed the film rights brought suit in Kentucky for copyright infringement. Another production company with a connection to Maurer decided to get into the act too, and filed its own suit in California. In Followay Productions, Inc. v. Maurer, 603 F.2d 72 (9th Cir. 1979), the Ninth Circuit affirmed dismissal of the California action for failure to join a necessary party (Maurer). The Kentucky action settled out of court.

Rocky (1976)

Screenwriter Timothy Anderson, apparently a fan of the first three Rocky movies (all written by Sylvester Stallone), penned a treatment for a fourth film and submitted it to MGM. The treatment involved an East German boxer and a boxing match in the shadow of the Berlin Wall. Anderson claimed that MGM and Stallone used the treatment for the film Rocky IV (the one with Dolph Rundgren as Soviet boxer Ivan Drago). In Anderson v. Stallone, 1989 U.S. Dist. LEXIS 11109 (C.D. Cal. 1989), the Court held that the treatment was not entitled to copyright protection because it was an unauthorized derivative work using Stallone’s characters. The Court also found that there was no substantial similarity between the treatment and film. However, the Court did allow certain contract claims to survive summary judgment.

Annie Hall (1977)

Following the success of Annie Hall, Woody Allen look-alike Phil Boroff found himself in high demand. In Allen v. National Video, Inc., 610 F.Supp. 612 (S.D.N.Y. 1985), Allen convinced the Court that Boroff’s appearance in an advertisement for a video rental chain (Boroff was strategically placed next to a cassette copy of Annie Hall) was a Lanham Act violation because it created a likelihood of consumer confusion. The Court enjoined Boroff from appearing in similarly confusing ads.

But the following year, Boroff appeared in an ad for a clothing store holding a clarinet and evoking what Allen alleged was his “schlemiel” persona from the film. At the bottom of the ad was a disclaimer indicating that the person depicted was a celebrity look-a-like. Allen moved for contempt. The court reluctantly found that, although the ad was in “clear contempt” of the spirit of the earlier order, it did not violate its letter, which had been ambiguous as to whether such a disclaimer would be sufficient. The Court did, however, issue an amended order to prevent future violations. Later, in Allen v. Men’s World Outlet, Inc., 679 F.Supp. 360 (S.D.N.Y. 1988), the Court granted summary judgment in favor of Allen’s Lanham Act claims against the clothing store.

The Deer Hunter (1978)

In 1970, Harry John Klekas, a court bailiff from Salt Lake City, wrote The Fields of Discontent, a manuscript about a 20-year military veteran living in a small mill town in Utah. Klekas claimed that The Deer Hunter infringed his manuscript. However, in Klekas v. EMI Films, 150 Cal. App. 3d 1102 (Cal. App. 1984), the Court held that, other than the common theme of soldiers returning from war (and, in part, a “small mill town” backdrop), there was no substantial similarity between the works.

Driving Miss Daisy (1989)

Henry Denker claimed that his novel Horowitz and Mrs. Washington, which depicts the relationship between an old Jewish man and his African American physical therapist, was copied by the makers of Driving Miss Daisy. However, in Denker v. Uhry, 820 F.Supp. 722 (S.D.N.Y. 1992), the Court held that, other than the abstract theme of a relationship between an elderly Jewish person and an African American employee, there was no substantial similarity between the works.

Forrest Gump (1994)

Forrest Gump is notable in part because of special effects which digitally altered archival footage so that historical figures — such as President Kennedy and John Lennon — appeared to be speaking lines written by the film’s screenwriter. The inventor of a similar process — for digitally altering lip movements in order to dub moving images into different languages — brought suit for patent infringement. In Bloomstein v. Paramount Pictures Corp., 1998 U.S. Dist. LEXIS 20905 (N.D. Cal. 1998), the Court granted the defendant’s motion for summary judgment, in part because the plaintiff’s patent claims encompassed only translations of lip movements into foreign languages, and did not extend to the English-to-English digital alterations in the film.

Titanic (1997)

Plaintiff “Princess Samantha Kennedy,” proceeding pro se, claimed that the film Titanic was copied from her own unpublished biographical works about her father, a whistleblower who was forced out of the United States Air Force during the 1950’s. In Kennedy v. Paramount Pictures Corp., 2013 U.S. Dist. LEXIS 43882 (S.D. Cal. 2013), the Court dismissed the action, finding that, “at best,” the only similarities alleged in the complaint were generic scenes a faire. The Court held that the similarities in language alleged by the plaintiff (e.g., a character who “slicks his hair back with spit” (Titanic) versus a character who “slicked back his greasy hair” (Kennedy’s work)) amounted to no more than ordinary expressions of ideas not subject to copyright protection. The Court also noted that Kennedy had brought a similar pro se suit several years earlier, alleging that 1994 Best Picture winner Forrest Gump was copied from her works.

Another pro se writer claiming to have written the base material for Titanic came forward in Manuel v. Paramount Pictures, 2001 U.S. Dist. LEXIS 16065 (S.D.N.Y. 2001). Dennis Manuel alleged that Titanic was substantially similar to his screenplay, Camp Terror, the story of a camp counselor who heroically fights off a group of ex-convicts. The Court held that the only similarities between the works included a female protagonist who “is trembling” in one scene, and therefore “no sane fact finder” would be able to find a substantial similarity.

In Jorgensen v. Epic/Sony Records, 2004 U.S. Dist. LEXIS 25328 (SDNY 2004), musician John Jorgensen claimed that the Celine Dion song My Heart Will Go On, from the Titanic soundtrack, infringed his song Long Lost Lover. The Court dismissed the claim on summary judgment, on the grounds that there was no genuine dispute that the defendant composers did not have access to the plaintiff’s work, and there was nothing to support an allegation of “striking similarity.”

In 2014, an extra who had played the part of “spindly porter” in Titanic filed claims against the makers of Ghosts of the Abyss, an IMAX 3D documentary about the actual Titanic wreck, which incorporated plaintiff’s scenes from the movie Titanic. The Court in Vijay v. Twentieth Century Fox, 2014 U.S. Dist. LEXIS 152098 (C.D. Cal. 2014), while refusing to dismiss certain contract claims, did dismiss plaintiff’s right of publicity count on the grounds that both Titanic and Ghost of the Abyss were expressive works in which plaintiff appeared for a “miniscule portion,” and to which plaintiff’s likeness added no economic value.

Even the props in Titanic have given rise to IP litigation. In 1998, Twentieth Century Fox sought to enjoin the Suarez Corporation from selling “Jewel of the Sea” necklaces, alleging both trademark and copyright infringement. These necklaces, allegedly copied from the “Heart of the Ocean” necklace that was prominently featured in the film, sold for only $19 (compared with $195 for an authorized replica). And in case you were wondering whether this was just a coincidence, the defendant’s ads placed the necklace alongside an actor resembling Leonardo DiCaprio (in fact, the very actor who served as DiCaprio’s stunt double in the film). The defendant avoided a TRO by voluntarily consenting to remove its ads from various publications. However, when it turned out that it was too late to stop 18 ads from being published, the studio moved to enjoin the defendant from filling the orders resulting from these ads. The Court in Twentieth Century Fox Film Corp. v. Suarez Corp., 1998 U.S. Dist. LEXIS 3487 (S.D.N.Y. 1998), finding that Suarez had attempted to cancel the ads in good faith and that the plaintiff “has not been so much as dented by defendant’s activities,” denied the motion and allowed Suarez to fill existing orders. The court reasoned: “we cannot believe that any person intent on going to Tiffany’s to buy a $200 necklace for a loved one would be deterred by the knowledge that a person of lesser means could go to Woolworth’s . . . and get a cheaper one.”

Shakespeare in Love (1999)

Plaintiffs Don Miller and Peter Hassinger were the co-authors of The Dark Lady, a screenplay “about William Shakespeare writing a new play and failing in love.” They shopped the screenplay to numerous studios, including the one that ultimately made Shakespeare in Love. Miller and Hassinger claimed that film infringed their screenplay, and filed a copyright infringement action. The Court in Miller v. Miramax Film Corp., 2001 U.S. Dist. LEXIS 25967 (C.D. Cal. 2001) agreed with the defendants that many of the similarities between the works were mere “stock scenes” (i.e., scenes a faire) that were typical of and necessary for the shared subject matter of the works — for example, historical characters and locations. However, the court further held there were enough similarities in protected expression to survive summary judgment. Both works involved Shakespeare suffering from writer’s block while under pressure to write a new play, burning the manuscript in frustration, then meeting a literate noble woman who knows his work by heart, has an affair with him, inspires him to overcome his writer’s block and stars in the new play prior to leaving for the New World. The case settled before trial.

The Lord of the Rings: The Return of the King (2003)

As we previously reported, Warner Brothers, makers of the blockbuster Lord of the Rings films, filed a trademark infringement action against Global Asylum over its new straight-to-video “mockbuster,” Age of Hobbits. The Court rejected Global Asylum’s First Amendment defense (pursuant to the Rogers v. Grimaldi test) because the word “hobbit” had no artistic relevance to the defendant’s film and because it would be misleading to consumers. Global Asylum also asserted a nominative fair use defense, arguing that “hobbit” had become a “generic” term used by the public to describe Homo Floresiensis, an early hominin. Finding that Global Asylum had presented no evidence to back up this extraordinary claim, the Court issued a TRO against further distribution of Age of Hobbits, and was affirmed by the Ninth Circuit in Warner Bros. Entm’t, Inc. v. Global Asylum, 54 Fed. Appx. 683 (9th Cir. 2013).

Million Dollar Baby (2004)

See those boxing fans in the background? They are actually “inflatable humanoid forms,” presumably cheaper and more cooperative than real live extras. Plaintiff, inventor of “Crowd in a Box,” claimed that its patents were infringed by the inflatable mannequins used in Million Dollar Baby, which had been created by the Inflatable Crowd Company. The Court, in Crowd in a Box Co. v. Inflatable Crowd Co., 2007 U.S. Dist. LEXIS 96493 (C.D. Cal. 2007), granted the defendant’s motion for summary judgment, holding that the patents were invalid for obviousness.

The Hurt Locker (2009)

In 2004, writer Mark Boal was embedded in an Army unit in Iraq where Jeffrey Sarver served as an Explosive Ordinance Disposal (EOD) technician. Boal eventually published an article about Sarver for Playboy Magazine, and subsequently wrote the screenplay for The Hurt Locker. Sarver claimed that the character of Will James (played by Jeremy Renner) was based on him and filed suit. He alleged numerous counts, including misappropriation of a likeness. In Sarver v. Hurt Locker LLC, 2011 U.S. Dist. LEXIS 157503 (C.D. Cal. 2011), the court dismissed Sarver’s complaint and held, inter alia, that the film was protected speech about a public issue, and that “whatever recognition or fame Plaintiff may have achieved, it had little to do with the success of the movie.” The Court also granted the defendants’ anti-SLAPP motion and awarded attorneys’ fees.

The Hurt Locker has also been the subject of a number of copyright infringement claims aimed at internet users who allegedly downloaded pirated copies of the film via BitTorrent. See Voltage Pictures, LLC v. Vazquez, 277 F.R.D. 28 (D.D.C. 2011).

12 Years a Slave (2013)

Although it has not yet resulted in a published opinion, we note that just about a month ago, composer Richard Friedman filed a complaint for copyright infringement, alleging that the music in 12 Years a Slave was substantially similar to his copyrighted work. Friedman’s complaint also includes counts for violation of his moral rights under French and German law.

Special thanks to Alice Yu, Foley Hoag Associate, for her research and initial drafts for this article.

]]>http://www.trademarkandcopyrightlawblog.com/2015/02/and-the-lawsuit-goes-to-an-oscar-time-guide-to-best-picture-intellectual-property-litigation/feed/0AdCode 2.0: Better Business Bureau Updates Advertising Code to Keep Up With Technologyhttp://www.trademarkandcopyrightlawblog.com/2015/02/adcode-2-0-better-business-bureau-updates-advertising-code-to-keep-up-with-technology/
http://www.trademarkandcopyrightlawblog.com/2015/02/adcode-2-0-better-business-bureau-updates-advertising-code-to-keep-up-with-technology/#commentsMon, 16 Feb 2015 13:30:48 +0000http://www.trademarkandcopyrightlawblog.com/?p=2844The Better Business Bureau announced last Thursday that it has amended its Code of Advertising to address the new and evolving ways in which advertisers reach consumers through technology. The Better Business Bureau is the administrative parent of the advertising industry’s self-regulatory bodies, including the National Advertising Division.

As advertisers market to consumers who spend more time looking at smart phones and computer screens than television screens and magazines (the traditional media of mass-market advertising), the methods of advertising have changed. The basic tenets of advertising law still apply—i.e., claims must be truthful, not misleading, and substantiated—but... More]]>

The Better Business Bureau announced last Thursday that it has amended its Code of Advertising to address the new and evolving ways in which advertisers reach consumers through technology. The Better Business Bureau is the administrative parent of the advertising industry’s self-regulatory bodies, including the National Advertising Division.

As advertisers market to consumers who spend more time looking at smart phones and computer screens than television screens and magazines (the traditional media of mass-market advertising), the methods of advertising have changed. The basic tenets of advertising law still apply—i.e., claims must be truthful, not misleading, and substantiated—but the rules drafted to enforce those basic tenets have been updated to catch up with modern technology.

According to the Better Business Bureau, “one of the most significant changes to the Code is an update to the section on testimonials and endorsements, to reflect the Federal Trade Commission’s current thinking on, among other things, the use of such testimonials in social media.” Additional changes touch on substantiation of “up to” claims (e.g., claims of savings up to 10%), close-out and liquidation sales, duration of sales periods, rebate promotions and distinctions between puffery and objective superlative claims.

]]>http://www.trademarkandcopyrightlawblog.com/2015/02/adcode-2-0-better-business-bureau-updates-advertising-code-to-keep-up-with-technology/feed/0Celebrity Trademark Watch: Can Taylor Swift Shake Off Accusations of Trademark Greed?http://www.trademarkandcopyrightlawblog.com/2015/02/celebrity-trademark-watch-can-taylor-swift-shake-off-accusations-of-trademark-greed/
http://www.trademarkandcopyrightlawblog.com/2015/02/celebrity-trademark-watch-can-taylor-swift-shake-off-accusations-of-trademark-greed/#commentsWed, 11 Feb 2015 14:45:32 +0000http://www.trademarkandcopyrightlawblog.com/?p=2841Had enough of Taylor Swift yet? For those of you who hate to love her, you might consider Swiftamine, because she is not going anywhere anytime soon. If anything, her media foot print continues to grow. And while one expects round-the-clock coverage of the pop music megastar on E! Entertainment Television and the like, she is now showing up on the intellectual property blogs, too.

Back in October, Ms. Swift filed sixteen intent-to-use applications to register the mark THIS SICK BEAT, which, to those in the know, is a lyric... More]]>

Had enough of Taylor Swift yet? For those of you who hate to love her, you might consider Swiftamine, because she is not going anywhere anytime soon. If anything, her media foot print continues to grow. And while one expects round-the-clock coverage of the pop music megastar on E! Entertainment Television and the like, she is now showing up on the intellectual property blogs, too.

Back in October, Ms. Swift filed sixteen intent-to-use applications to register the mark THIS SICK BEAT, which, to those in the know, is a lyric from her multi-platinum hit single “Shake it Off.” The applications claim a variety of goods and services ranging from beauty products, jewelry, and apparel to musical recordings, musical instruments, fan club services, and public appearances.

As sometimes happens when celebrities seek to secure trademark rights in common phrases (is “this sick beat” a common phrase these days?), a backlash has erupted, criticizing the pop mogul for trying to monopolize the free speech of others. Ms. Swift certainly knows that the haters gonna hate, hate, hate, hate, hate, but I suspect even she didn’t anticipate the vitriol that her trademark applications have engendered. Peculate, a self-described “progressive metal” composer, decried Swift’s applications and trademarks in general as “a direct attack on one of the most fundamental and inalienable rights of all: our freedom of speech.” The “bourgeoisie” such as Swift, the argument continues, “have already privatized land, water, and words. After language, they will next try to privatize air.” At least that is how Peculate sees it and, in an apparent act of protest, he has released the song “This Sick BeatTM” (warning – turn down your speaker volume).

Of course, Peculate and all others concerned that Taylor Swift is setting the stage to take over the world, can rest easy. Trademark registrations do not confer upon the owner the right to dictate how a word or phrase will be used by anyone who cares to utter it. Trademarks do confer the exclusive right to use a word, phrase, image, or other designation in commerce and in connection with the marketing or sale of particular goods or services in order to distinguish them from those of others. Trademarks are an indication of source, not a license to restrain speech. In addition, trademark registrations grant trademark owners certain rights and privileges, such as national priority in the registered mark and the right to use the ® symbol.

So, the next time you are on the dance floor and the DJ spins your favorite tune, feel free to proclaim, “I love this sick beat.” You will not have to send Taylor Swift a check. As for Peculate, maybe a bit of legal knowledge will help mend the rift with Ms. Swift, although I suspect they are never, ever, ever getting back together.

Fortres’ software, called “Clean Slate,” erases user changes to public computers upon reboot, thus returning the computer to its original configuration, i.e., giving it a clean slate. Fortres’ complaint against Batman is that, in the weakest installment (IMHO) of Christopher Nolan’s otherwise-awesome Batman trilogy, The Dark Knight Rises, Catwoman seeks out an elusive (entirely fictional) hacking software, also called “Clean Slate,” in order to delete her criminal record from every database... More]]>

When Fortres Grand Corporation saw sales of its software program drop, it blamed – wait for it – Batman.

Fortres’ software, called “Clean Slate,” erases user changes to public computers upon reboot, thus returning the computer to its original configuration, i.e., giving it a clean slate. Fortres’ complaint against Batman is that, in the weakest installment (IMHO) of Christopher Nolan’s otherwise-awesome Batman trilogy, The Dark Knight Rises, Catwoman seeks out an elusive (entirely fictional) hacking software, also called “Clean Slate,” in order to delete her criminal record from every database in the world.

Fortres sued Warner Brothers, the studio affiliated with the film, for infringement of the CLEAN SLATE trademark, arguing that consumers could be confused into believing that Fortres was somehow affiliated with the movie. Fortres also articulated a reverse confusion theory: that audiences would incorrectly believe that the real-world Clean Slate program “emanates from, is connected to, or is sponsored by” Warner Brothers. The District Court dismissed the complaint for failing to state a plausible claim.

Seventh Circuit Appeal

On appeal, Fortres pressed only its reverse confusion argument, and the Seventh Circuit co
nsidered this issue de novo. Judge Daniel Anthony Manion clearly had fun with this decision, as evidenced by his completely extraneous (and perhaps somewhat disappointed) footnote about the lack of aliens in The Dark Knight Rises, and his *Spoiler Alert* warning to protect Batman fans with some catching up to do.

More importantly, Judge Manion determined that the goods at issue in a consumer confusion analysis are those that are actually available on the real-world market. Fortres’ security software therefore should not be compared with the fictional software, which was not available in the real world, but with the Warner Brothers’ film, which was. Because the software and the film were not similar goods, and not related in a way that consumers would expect them to come from a single source, there was no likelihood of confusion.

Judge Manion also addressed what he interpreted as an unspoken dilution argument by Fortres – that consumers would view the Clean Slate software as an illicit hacking tool because of the connection to the criminal underworld in The Dark Knight Rises. Trademark dilution, however, which does not require a likelihood of confusion, is a claim available to only famous marks. The Court held that, even if some “unusually gullible hypothetical consumers” would draw a connection, CLEAN SLATE is not a famous mark, so Fortres was unable to plead any plausible claim against Warner Brothers.

Cert. Petition

Fortres, perhaps unsurprisingly, thought that Judge Manion got it wrong. By the time Fortres filed its petition for certiorari with the Supreme Court, it had disowned any argument that a consumer would confuse a movie and a security software program. Instead, Fortres focused its argument on the existence of Batman-themed websites such as rykindata.tumblr.com/cleanslate. These real websites, set in the film’s fictional universe, present the fictional Clean Slate program, by fictional company Rykin Data Corporation, as though it actually exists, thus — so the argument goes — creating a likelihood of confusion. (Warner Brothers denies any connection to such websites, but this dispute of fact was not at issue on a motion to dismiss.)

Judge Manion had been unimpressed by this line of argument, because he found that the websites were at most advertising for the real good at issue: the film. The Supreme Court may have agreed (or, as fellow representatives of justice clad in flowing black garments, may have felt an unspoken camaraderie with the Caped Crusader) because this month, they denied the petition for certiorari.

In a unanimous ruling, the Supreme Court upheld the Ninth Circuit Hana Financial v. Hana Bank and ruled that the question of “tacking” — whether a party’s prior version of its trademark is so closely similar to the current one that the prior period of use should be added, thus giving an earlier priority date — is for juries, not judges, to decide. The logic of the opinion is fairly simple: since the similarity of the prior mark is... More]]>

In a unanimous ruling, the Supreme Court upheld the Ninth Circuit Hana Financial v. Hana Bank and ruled that the question of “tacking” — whether a party’s prior version of its trademark is so closely similar to the current one that the prior period of use should be added, thus giving an earlier priority date — is for juries, not judges, to decide. The logic of the opinion is fairly simple: since the similarity of the prior mark is to be evaluated from the perspective of “an ordinary purchaser or consumer,” lay jurors are well suited to make this determination.

This ruling will have fairly serious implications for trademark enforcement. Prior decisions had held that the tacking doctrine is “extraordinarily narrow,” in that the prior mark had to be “virtually identical” to the current one. The purpose of the doctrine was to allow mark holders to “polish up” their marks without fear of losing priority. From a trademark enforcement perspective, this meant that a party writing a cease and desist letter could feel fairly confident about the other side’s priority date. Now, relative priority may be far less clear.

The facts of the case illustrate how broadly the tacking doctrine can be interpreted by juries. The jury allowed the defendant in the case, now using the mark HANA BANK, to tack not once, but twice to get priority over the plaintiff — from HANA BANK to the prior mark HANA WORLD CENTER, and from that mark to the one prior to that, HANA OVERSEAS KOREAN CLUB. It seems very unlikely that a judge would have found these three fairly distinguishable marks to be “virtually identical,” or mere “polishing,” but the jury did. Indeed, the Ninth Circuit had acknowledged in its opinion that its “characterization of tacking as a question of fact is arguably dispositive” — implying fairly clearly that it would have ruled differently, and disallowed the tacking, if the standard of review were looser.

The overall trend at the Supreme Court seems to be to limit appellate review of IP cases. In the patent arena, recent rulings have accorded more deference to district court judges in their Markman rulings and in their “exceptional case” determinations for purposes of fee-shifting. Prior to that, the justices had held that irreparable harm in IP cases need no longer be presumed, but can be assessed by district courts on a discretionary, case-by-case basis. Given the extremely broad deference that will now be given to tacking and priority determinations by juries, we can add Hana Financial to the list of recent cases that reduce the role of the federal appellate courts.

]]>http://www.trademarkandcopyrightlawblog.com/2015/02/tacky-victory-hana-bank-allowed-to-use-three-different-trademarks-to-gain-priority-over-hana-financial/feed/0(You Gotta) Fight for Your Right (to Enforce Your Copyrights!)http://www.trademarkandcopyrightlawblog.com/2015/02/you-gotta-fight-for-your-right-to-enforce-your-copyrights/
http://www.trademarkandcopyrightlawblog.com/2015/02/you-gotta-fight-for-your-right-to-enforce-your-copyrights/#commentsMon, 02 Feb 2015 13:30:47 +0000http://www.trademarkandcopyrightlawblog.com/?p=2828The Beastie Boys can look back on 2014 as a year of good copyright outcomes. The preceding years had seen their music used without authorization in two promotional videos, by Goldieblox and Monster Energy, despite the surviving members’ commitment to honor the wishes of Adam Yauch, known as MCA, that Beastie Boys music not be used in commercial advertisements. The remaining band members, Adam Horowitz and Michael Diamond, decided to Make Some Noise about both unauthorized uses and, in 2014, saw the resulting legal disputes... More]]>The Beastie Boys can look back on 2014 as a year of good copyright outcomes. The preceding years had seen their music used without authorization in two promotional videos, by Goldieblox and Monster Energy, despite the surviving members’ commitment to honor the wishes of Adam Yauch, known as MCA, that Beastie Boys music not be used in commercial advertisements. The remaining band members, Adam Horowitz and Michael Diamond, decided to Make Some Noise about both unauthorized uses and, in 2014, saw the resulting legal disputes favorably resolved.

Goldieblox

In 2013, Goldieblox, a start-up toy company that aims to interest young girls in engineering, posted a clever video online. The video depicted young girls constructing a Rube Goldberg contraption using Goldieblox products and repurposed traditional “girl” toys. The video was accompanied by the Beastie Boys’ oh-so-catchy song Girls, also repurposed. The original lyrics of Girls are a humorous mess of (arguably satirical) misogynist stereotypes that read like a bratty six-year-old boy’s understanding of what girls are and should be: “Girls to do the dishes; girls to clean up my room…” Goldieblox rewrote the lyrics to be empowering: “Girls to build a spaceship; girls to code a new app…”

The video went viral, and came to the Beastie Boys’ attention. The group wrote a letter to Goldieblox, expressing their support for Goldieblox’s mission, but explaining their decision not to license their music for any advertisements. Goldieblox responded with a declaratory judgment lawsuit, asking a judge to find that their video constituted a fair-use parody of Girls, because it criticized the sexist nature of the original lyrics. The Beastie Boys countersued for copyright infringement and violation of the Lanham Act.

It would have been interesting to watch this dispute play out. Courts use a balancing test to identify protected fair use: the parodic nature of the video would have weighed heavily in GoldieBlox’s favor, while the commercial aspect would have weighed heavily for the Beastie Boys. Instead, Goldieblox decided that this wasn’t the Time to Get Ill, and the case settled in May 2014. Goldieblox (begrudgingly) posted an apology on its website, and, in a move that meant everybody wins, agreed to pay a portion of its proceeds to a charity of the Beastie Boys’ choice that supports science, technology, engineering, and math education for girls.

Monster

The day after Adam Yauch passed away, in May 2012, Monster Energy Drink held its annual “Ruckus in the Rockies” snowboarding competition. A DJ known as Z-Trip performed at the after-party, and played some Beasties Boys music, including his own authorized remix of several of their songs. Afterwards, Nelson Phillips, a Monster employee, produced a four-minute recap video set to Z-Trip’s Beastie Boys All-Access Megamix, which includes five Beastie Boys songs. The video, which was replete with Monster branding, included “ALL-ACCESS BEASTIE BOYS MEGA MIX COURTESY OF Z-TRIP” in its credits, and ended with the memorial text: “RIP MCA.”

When Monster posted the video online, the Beastie Boys sued, alleging infringement of their copyrights in the songs, and violation of the Lanham Act by creating the false impression that the Beastie Boys had endorsed Monster.

Monster’s first response was to Pass the Mic. Monster filed a third-party complaint against Z-Trip, claiming that he led Phillips to believe he had the legal authority to license use of the Megamix, and that he was providing such a license to Monster. These claims were based on a short conversation between Phillips and Z-Trip in the green room before Z-Trip’s performance at the Ruckus, and an email exchange where Z-Trip viewed the video before it was posted and proclaimed it “Dope!” Phillips and Z-Trip gave very different accounts of the green room conversation, and the email exchange didn’t contain any explicit discussion of licensing the rights to the Beastie Boys’ songs.

Monster’s third-party claims against Z-Trip were dismissed at summary judgment. Judge Engelmayer of the Southern District of New York made it abundantly clear that a large corporation like Monster should never have entrusted Phillips, who had no training or experience with copyright licensing, with producing content for the company without proper oversight. Whether or not Phillips thought he had the permissions he needed, someone at Monster should have thought to Ch-Check It Out. Instead, the video only went through one round of review before posting – and this round merely involved another employee checking that it “fit with the Monster Energy brand.”

Without the “blame Z-Trip” option, Monster admitted liability for copyright infringement. At the trial last summer, the jury therefore only had to consider the Beastie Boys’ false endorsement claim and damages. The jury found that Monster’s infringement was willful, and that it intentionally deceived consumers into believing the Beastie Boys endorsed Monster, and awarded damages of $1.7 million. Monster moved for the judge to overturn the verdict or grant it a new trial, but Judge Engelmayer denied the motion: Monster was just going to have to Deal With It.

But $1.7 million may not be the end of the story. This month, the Beastie Boys are back in court, asking that the judge require Monster to pay at least some of its legal fees. Universal Music has also sued Monster for infringement of its share of the rights in the same songs. These cases serve as an important reminder that companies both large and small need to navigate carefully in producing online content. Potential infringers would be wise to remember that the Beastie Boys Don’t Play No Game That [they] Can’t Win.

]]>http://www.trademarkandcopyrightlawblog.com/2015/02/you-gotta-fight-for-your-right-to-enforce-your-copyrights/feed/1Ninth Circuit (Mostly) Skirts the Issue of Copyright Misuse in Most Recent Omega v. Costco Decisionhttp://www.trademarkandcopyrightlawblog.com/2015/01/ninth-circuit-mostly-skirts-the-issue-of-copyright-misuse-in-most-recent-omega-v-costco-decision/
http://www.trademarkandcopyrightlawblog.com/2015/01/ninth-circuit-mostly-skirts-the-issue-of-copyright-misuse-in-most-recent-omega-v-costco-decision/#commentsMon, 26 Jan 2015 13:30:23 +0000http://www.trademarkandcopyrightlawblog.com/?p=2822Sometimes a cigar is just a cigar, as the saying goes. However, things are not always as they appear, and sometimes events unfold in ways you would not anticipate. Such is the case with the Ninth Circuit decision in the matter of Omega v. Costco. The case concerns Omega’s allegations that Costco was importing watches bearing the Omega symbol, thus infringing the copyright in that design. Despite the fact that the parties on appeal briefed only one hotly contested legal issue – copyright misuse – the Ninth Circuit’s majority opinion... More]]>Sometimes a cigar is just a cigar, as the saying goes. However, things are not always as they appear, and sometimes events unfold in ways you would not anticipate. Such is the case with the Ninth Circuit decision in the matter of Omega v. Costco. The case concerns Omega’s allegations that Costco was importing watches bearing the Omega symbol, thus infringing the copyright in that design. Despite the fact that the parties on appeal briefed only one hotly contested legal issue – copyright misuse – the Ninth Circuit’s majority opinion contains no holding regarding this issue. The concurrence, however, takes the ball and runs with it, providing potential ammunition for future litigations to argue that the doctrine of copyright misuse should apply in these circumstances.

The Winding Road to the Ninth Circuit’s Ultimate Decision

As we previously discussed here, in its 2013 opinion in Kirtsaeng v. John Wiley & Sons, the Supreme Court held that the copyright first sale doctrine attaches under U.S. law when authorized, copyrighted goods are manufactured and first sold abroad. This means that copyright owners cannot control downstream sales of goods sold abroad and imported by a third party into the United States. Because a first sale has taken place, third parties are free to import and resell the goods without consent of the copyright owner.

But long before the Kirtsaeng decision, the Ninth Circuit came to the opposite conclusion in 2008, in its first opinion in Omega v. Costco. Having determined that foreign sales do not invoke the first sale doctrine, the Ninth Circuit upheld Omega’s right to sue Costco for copyright infringement.

Costco, unable to rely on the first sale doctrine, turned to the doctrine of copyright misuse. At summary judgment, Costco claimed that Omega’s use of the copyrighted symbol on the watches as a means to control the sale of watches themselves constituted copyright misuse. The District Court agreed that Omega had misused its copyright and, without much discussion of the prevailing law, granted Costco’s motion for summary judgment. Omega once again turned to the Ninth Circuit, filing another appeal in 2011 on the issue of copyright misuse. The Ninth Circuit issued its second Omega v. Costco decision on January 20, 2015.

Copyright Misuse Not Relevant to Ninth Circuit’s Majority Decision

The Ninth Circuit’s majority opinion on Omega’s copyright misuse appeal, surprisingly, did not address the issue of copyright misuse. Instead, armed with the Supreme Court’s recent Kirtsaeng decision, the Ninth Circuit revisited its effectively overruled earlier opinion on the first sale doctrine. The majority held that Omega, having first sold its watches abroad, never had a copyright claim against Costco in the first place. On this basis alone, the Ninth Circuit upheld the lower court’s summary judgment ruling in favor of Costco, without reference or regard to copyright misuse.

Concurring Opinion Upholds Finding of Misuse

The majority’s opinion may have been disappointing to many copyright owners, who had been awaiting the Ninth Circuit decision with more than a little interest. If affixing a copyrighted symbol to a consumer good like a watch, for the purposes of controlling sales and reproductions of the watch, is viewed as copyright misuse, it could have broad implications for any industry that sells consumer items marked with copyrighted material.

But the concurring opinion did address this issue and found that Omega had misused its copyright. Circuit Judge Wardlaw stated quite clearly that copyright protects Omega’s symbol, not Omega’s watches, and that “Omega’s attempt to expand the scope of its statutory monopoly by misusing its copyright . . . upset this balance.”

This copyright misuse issue is sure to pop up again, doubtless with citation to Judge Wardlaw’s concurrence. However, the resolution of this issue will likely come in another case, because it appears as though Costco and Omega’s dispute has reached its conclusion.